What’s the current law?

According to 35 U.S.C. 102(a)(2), an invention that’s “described” in a patent or published patent application is prior art as of its filing date.

How are we currently interpreting the law?

In Ariosa v. Illumina, the Federal Circuit decided that the subject matter in a provisional patent application counts as prior art only if a subsequent non-provisional application claiming priority to the provisional was published or patented — and claimed the subject matter from the provisional.

In other words, if a later-filed patent application doesn’t claim subject matter from the provisional, then the unclaimed subject matter isn’t prior art against third parties (as of the filing date of the provisional).

What is Ariosa Diagnostics’ argument?

Because one criterion for patentability is that the invention must be “new,” Ariosa Diagnostics is arguing that an entity should not be able to receive patent rights for an idea that somebody else has already disclosed in a provisional patent application.

Put another way, the person who creates prior art should be the first inventor — not the first person to write the subject matter into the claims section of a patent application.

By that logic, unclaimed disclosures in a provisional patent application should count as prior art, so long as a subsequent non-provisional application claiming priority to the provisional is published or patented.

How does Ariosa v. Illumina affect my filing strategy?

Many early-stage companies file provisional applications, and there are several good reasons for doing this, which we discuss in a separate blog post.

Notably, one of those reasons is for “defensive” purposes — but Ariosa v. Illumina exposes a potential weakness with that approach. In particular, the “defensive” value of the provisional filing depends on your later-filed non-provisional application, as summarized below.

How can patent applications be used to defend my work?

By filing a patent application defensively, you may be able to create prior art (as of the filing date of the patent application) that will prevent others from patenting the same inventions.

This is, in fact, one of the main value components to filing patent applications, even if the application never matures into a patent:

Prevent someone else from getting a patent covering your technology

Avoid getting sued for patent infringement by someone else who might independently derive the same invention later and then get a patent

What about provisional patent applications? Can I also use them defensively?

Because of the rule we just summarized above, you might not get the same defensive value from provisional applications.

The provisional application creates prior art, as of its filing date, only for subject matter that is also later claimed in a non-provisional application.

If something is disclosed in the provisional but isn’t claimed in the non-provisional application, that subject matter doesn’t become prior art until the non-provisional filing date — which might be up to one year after the provisional filing date.

So if someone files a patent application sometime between the filing dates of your provisional and non-provisional applications, that person might still be able to get a patent on the subject matter you didn’t claim in your non-provisional, even if you disclosed that information in your provisional.

This rule might change if the Supreme Court grants certiorari and, in its review, sides with Ariosa Diagnostics. But for now, you should take a cautious approach and follow the Federal Circuit’s decision.

We’ll keep an eye on how this case develops, and we’ll certainly keep you updated!

Stay up-to-date with recent changes in the U.S. patent system

The U.S. Supreme Court, Congress, and the USPTO are all playing key roles in introducing landmark changes to the modern U.S. patent system.

Given the number of changes that have occurred in recent memory, keeping track of how these might impact your business can prove tricky. Our FREE infographic, "Recent Changes in the U.S. Patent System," offers a snapshot of the most important developments from the past decade. Download it now!

Michael Henry is a principal and the founding member of Henry Patent Law Firm PLLC. Michael specializes in creating comprehensive, growth-oriented IP strategies for early-stage companies who are developing emerging technologies.